OPPOSITION No B 2 516 170
Gravity Worldwide Limited, Flat D, 7th Floor, Block 23, Laguna City, Kwun Tong, Kowloon, Hong Kong, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Hepworth Browne Limited, 15 St Paul’s Street, Leeds LS1 2JG, United Kingdom (professional representative)
a g a i n s t
Bixalo Limited, Chrisorrogiatissi & Kolokotroni, CY-3040 Limassol, Cyprus (applicant), represented by Thesis Law Firm – K. Tsiaga & Associes Societe D’Avocats, 4, rue Sekeri, 10674 Athens, Greece (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods
European Union trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear; soles for footwear, soles being parts of footwear
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; buckles, fasteners, eyelets, hooks, laces, ornaments for shoes; artificial flowers.
The contested goods are the following:
Class 9: Protective shoes [against accident or injury]; CD storage wallets; riding hats.
Class 18: Shoulder belts; belts (leather shoulder -); shoulder belts [straps] of leather; wallets; leather wallets; card wallets; key wallets; wallets (pocket -); pocket wallets; leather bags and wallets; wallets of precious metal; wallets including card holders; handbags, purses and wallets; wallets with card compartments; leather credit card wallets; credit card cases [wallets]; wallets for attachment to belts; wallets, not of precious metal; luggage, bags, wallets and other carriers; holders in the nature of wallets for keys.
Class 25: Shoes; boxing shoes; basketball shoes; cycling shoes; work shoes; athletics shoes; golf shoes; riding shoes; rugby shoes; canvas shoes; soccer shoes; leisure shoes; hiking shoes; walking shoes; hockey shoes; dance shoes; deck shoes; mountaineering shoes; anglers’ shoes; ballet shoes; tennis shoes; training shoes; snowboard shoes; shoes for leisurewear; esparto shoes or sandles; sandals and beach shoes; pullstraps for shoes and boots; tongues for shoes and boots; shoes with hook and pile fastening tapes; fabric belts; suspender belts; garter belts; tuxedo belts; waist belts; belts [clothing]; leather belts [clothing]; belts of textile; belts (money -) [clothing]; belts made from imitation leather; wrap belts for kimonos (datemaki); belts made out of cloth; scarfs; neck scarfs [mufflers]; hats; sun hats; bobble hats; rain hats; woolly hats; beach hats; small hats; fur hats; baseball hats; ski hats; toques [hats]; top hats; miters [hats]; mitres [hats]; hats (paper -) [clothing]; sports caps and hats.
Earlier European Union trade mark No 4 106 068 is registered for the entire class headings of Classes 18 and 25 of the Nice Classification. It was filed on 03/11/2004. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 8th edition.
Consequently, in order to take account of the entire alphabetical list in Classes 18 and 25, the Opposition Division will compare the goods of the contested mark with regard to (i) the general indications specified and if relevant (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 9
The contested CD storage wallets can be made of leather or imitations of leather. It follows that the contested CD storage wallets overlap with the opponent’s goods made of these materials and not included in other classes [leather and imitations of leather], since the latter is a broad category that includes articles such as cases, bags and other objects intended, inter alia, for the storage and carrying of other items. Therefore, they are identical.
The contested protective shoes [against accident or injury] have some similarities with the opponent’s non-slipping devices for boots and shoes included in the alphabetical list in Class 25. The contested goods are specifically designed for protecting part of the human body against a variety of injuries and potential hazards. The opponent’s goods are attachments for boots and shoes that help the wearer to keep their balance and prevent them from slipping on unsteady and unpredictable terrains, such as slick surfaces, dry or rocky pavement and trails, iced or wet surfaces, etc. The goods can take various forms, such as gears and devices to be attached to the outer sole of shoes, self-adhesive anti-slip sticks, etc. The goods are complementary to the extent that these opponent’s goods can be used together with the applicant’s protective shoes [against accident or injury], as the latter are an indispensable part of the former. Furthermore, the goods can be manufactured by the same or economically related companies, they target the same public and ultimately have the same purpose, that is to protect the human body from possible harms originating in the surrounding environment. It is concluded that these goods are similar.
The contested riding hats are used to protect the human body from possible accidents and injuries incurred during sports such as horse riding.
Whips are instruments used for driving animals, and saddlery is equipment for horses, such as saddles and harnesses. The applicant’s goods and the opponent’s goods are connected to the extent that the basic equipment required by a horse rider to be able to ride includes, inter alia, a whip, a saddle and a riding hat. These goods target the same consumers and are distributed through the same specialised shops. These goods are similar to at least a low degree.
Contested goods in Class 18
The contested luggage overlaps with the opponent’s trunks and travelling bags. Therefore, they are identical.
The contested shoulder belts; belts (leather shoulder -); shoulder belts [straps] of leather are items that can be made of leather and therefore they are included in the broad category of the opponent’s goods made of these materials and not included in other classes [leather and imitations of leather]. These goods are identical.
The opponent’s trunks and travelling bags are similar to the contested wallets; leather wallets; card wallets; key wallets; wallets (pocket -); pocket wallets; leather bags and wallets; wallets of precious metal; wallets including card holders; handbags, purses and wallets; wallets with card compartments; leather credit card wallets; credit card cases [wallets]; wallets for attachment to belts; wallets, not of precious metal; bags, wallets and other carriers; holders in the nature of wallets for keys. The goods can be manufactured by the same producers, can target the same public and are usually sold through the same distribution channels. These goods also have the same basic purpose, namely to store or carry items. Therefore, these goods are similar.
Contested goods in Class 25
Despite the slightly differing wording, the contested shoes; hats are identical to the opponent’s clothing, headgear.
The contested boxing shoes; basketball shoes; cycling shoes; work shoes; athletics shoes; golf shoes; riding shoes; rugby shoes; canvas shoes; soccer shoes; leisure shoes; hiking shoes; walking shoes; hockey shoes; dance shoes; deck shoes; mountaineering shoes; anglers’ shoes; ballet shoes; tennis shoes; training shoes; snowboard shoes; shoes for leisurewear; esparto shoes or sandles; sandals and beach shoes; shoes with hook and pile fastening tapes; fabric belts; suspender belts; garter belts; tuxedo belts; waist belts; belts [clothing]; leather belts [clothing]; belts of textile; belts (money -) [clothing]; belts made from imitation leather; wrap belts for kimonos (datemaki); belts made out of cloth; scarfs; neck scarfs [mufflers]; sun hats; bobble hats; rain hats; woolly hats; beach hats; small hats; fur hats; baseball hats; ski hats; toques [hats]; top hats; miters [hats]; mitres [hats]; hats (paper -) [clothing]; sports caps and hats are included in the broad category of the opponent’s footwear, clothing, headgear. Therefore, they are identical.
The opponent’s footwear uppers refer to the part or parts of a shoe that cover the toes, the top of the foot, the sides of the foot and the back of the heel. It is attached to the outsole of a shoe. Depending on the style of the shoe, the upper of a shoe can be cut from a single piece or can comprise many pieces stitched together. Parts of a shoe’s upper can include the vamp, the back, the tongue, the quarter and the lining. It follows that the contested tongues for shoes and boots are included in the broad category of the opponent’s footwear uppers, included in the alphabetical list. Therefore, they are identical.
The contested pullstraps for shoes and boots are similar to the opponent’s soles for footwear. These are all parts of footwear and can be made of the same material; therefore, they can have the same nature. Furthermore, these goods are normally produced by the same undertakings dedicated to the manufacturing of footwear. They coincide in their distribution channels and target the same public. It follows that these goods are similar.
Relevant public – degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar (to various degrees) are directed at the public at large and business customers with specific professional knowledge or expertise (this is the case, for instance, for footwear uppers tongues for shoes and boots, which can target professionals in the footwear manufacturing industry). The degree of attention is considered to vary from average to higher than average.
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a figurative mark consisting of the word GRAVITY written in bold, slightly stylised, black and white, upper case letters.
The contested sign is a figurative mark in black and white consisting of the word ‘GRAVITY’ in stylised, upper case letters, below which, in a smaller size, is the text ‘a natural law’ in lower case letters.
The element ‘GRAVITY’ in the earlier mark will be associated, inter alia, with the concept of relative heaviness of any object. This element does not have any clear connection with the goods at issue.
The same considerations described above also apply to the verbal element ‘GRAVITY’ in the contested mark. Furthermore, the additional text in the contested mark, which plays a marginal role in the sign due to its smaller size and secondary position, will be understood with its literal meaning, ‘a natural law’. When the verbal elements of the contested mark are read together, ‘GRAVITY a natural law’, they will be understood as referring to ‘the natural law of gravity’. As such, these verbal elements have no clear connotation with the goods at issue.
It follows that neither sign has any element that can be considered clearly more distinctive than other elements.
The earlier sign has no element that could be considered more dominant (visually eye-catching) than other elements.
The element ‘GRAVITY’ in the contested sign is the dominant element as it is the most eye-catching.
Visually, the signs coincide in the element ‘GRAVITY’, despite the different stylisations of the marks, and differ in the text ‘a natural law’ of the contested mark, which has only a marginal role within the mark due to its size and position.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the word ‘GRAVITY’, present identically in both signs. The pronunciation differs in the words ‘a natural law’ of the contested mark, which have no counterparts in the earlier sign. The signs coincide in three syllables, ‘GRA/VI/TY’, and differ in four, ‘a/na/tu/ral/law’.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the verbal element ‘GRAVITY’ in the earlier sign as referring to, inter alia, ‘the degree of relative heaviness characteristic of any kind or portion of matter’ (information extracted from Oxford English Dictionary on 15/06/2016 at http://goo.gl/JFYY2W). This element is also in the contested mark, along with the text ‘a natural law’. When read together, the words ‘GRAVITY a natural law’ will be perceived as making reference to the natural law of gravity.
As both signs will be perceived as referring to ‘GRAVITY’, the signs are conceptually identical. This conclusion is not called into question by the presence of the text ‘a natural law’ in the contested mark, which, if anything, strengthens the idea conveyed by the element ‘GRAVITY’.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The goods have been found partly identical and partly similar to different degrees.
The signs are visually and aurally similar to an average degree, and are conceptually identical. In particular, the signs coincide in the element ‘GRAVITY’, which is the only verbal element in the earlier sign and the most dominant element in the contested sign.
Moreover, likelihood of confusion includes the likelihood of association, in the sense that the average consumer, although aware of differences between the signs, nevertheless assumes that owing to their similarities they derive from the same undertaking or from economically linked undertakings. In the present case, it is likely that the contested sign will be associated by the English-speaking public with the earlier mark, creating an impression that the goods originate from the same undertaking or economically linked undertakings. Indeed, taking into account that the additional words ‘a natural law’ in the contested sign will be understood as qualifying the concept conveyed by the preceding element, ‘GRAVITY’ (which the marks have in common), it is likely that the English-speaking public will believe that the contested application is a brand variation, possibly identifying a different line of goods produced by the applicant.
Moreover, although a part of the public may pay special attention during the purchase of some of the goods in question, this will not be enough to avoid confusion regarding the origin of the goods, taking into account the fact that the signs have significant similarities.
Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), and also taking into account the principle of interdependence, the Opposition Division considers that the coincidences between the marks are sufficient to counteract the differences between the marks, and that the English-speaking consumers will perceive both signs as belonging to the same undertaking or, as the case may be, economically linked undertakings.
In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘GRAVITY’ and are registered for goods in Classes 18 and 25. In support of its argument the applicant refers to a few trade mark registrations in the European Union, France and the Benelux countries.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘GRAVITY’. Under these circumstances, the applicant claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’ European Union trade mark registration No 4 106 068. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Inés GARCÍA LLEDÓ
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.